12834330 (P.T.A.B. Mar. 11, 2014)

Ex Parte Hubbard

Patent Trial and Appeal BoardMar 11, 2014

12834330 (P.T.A.B. Mar. 11, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte MICHAEL J. HUBBARD ____________ Appeal 2012-004271 Application 12/834,330 Technology Center 3600 ____________ Before MURRIEL E. CRAWFORD, HUBERT C. LORIN, and MICHAEL C. ASTORINO, Administrative Patent Judges. ASTORINO, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE The Appellant appeals under 35 U.S.C. § 134 from the Examiner’s decision rejecting claims 1-20 under 35 U.S.C. § 103(a) as unpatentable over Davis (US 5,545,685, iss. Aug. 13, 1996) and Janoski (US 5,421,876, iss. Jun. 6, 1995). We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We REVERSE. Appeal 2012-004271 Application 12/834,330 2 Claimed Subject Matter Claims 1 and 13 are the independent claims on appeal. Claim 1, reproduced below, is illustrative of the subject matter on appeal. 1. A membrane product capable of adhering to a roof deck, said membrane product having two primary exterior surfaces, said membrane product comprising: a) a single-ply roofing membrane; and b) a layer of pressure sensitive adhesive that is free of curing additives, said adhesive layer having a thickness of no more than 15 mils, said adhesive layer directly contacting at least a portion of one side of said single-ply roofing membrane, and said single-ply roofing membrane constituting one of said two primary exterior surfaces of said membrane product. Similarly, the “membrane product” of claim 13 includes an “adhesive layer having a thickness of no more than 15 mils.” App. Br., Clms. App’x. OPINION The Examiner finds that Davis’s adhesive tape 14 reads on the claimed adhesive layer with two exceptions. See Ans. 4-5; see also Davis, col. 1, ll. 9-14. One of the exceptions concerns the adhesive layer being “free of curing additives”; the other exception concerns the claimed thickness, i.e., “no more than 15 mils.” See id. Although the Examiner relies on Janoski’s teachings to remedy the deficiency of Davis’s teaching for the former exception, the Examiner does not do so for the latter exception. See id. For the latter exception the Examiner determines that an adhesive layer having the claimed thickness “would have been a matter of obvious design choice to one of ordinary skill . . . to have such a different thickness for the adhesive layer for desirable application[s] (e.g. regional Appeal 2012-004271 Application 12/834,330 3 requirement) in order to ensure the roofing membrane [is] strongly bonded.” Id. (emphasis added). The Appellant contends, among other things, that the Examiner’s determination regarding the adhesive layer thickness is flawed. See App. Br. 14-16, Reply Br. 4-5. The Appellant’s contention is persuasive. In response to the Appellant’s contention the Examiner explains, “desirable applications such as a thicker layer would provide more strength and suitable securement to roofing membranes.” Ans. 7 (emphasis added). However, Davis discloses that its adhesive tape1 has a preferred thickness of 20 to 60 mils, and that adhesive tapes up to 250 mils may be useful. Davis, col. 13, ll. 60-63. Therefore, the preferred thickness of Davis’s adhesive tape is at minimum thicker than the claimed thickness range of “no more than 15 mils.” Hence, the Examiner’s response that as a design choice an ordinary artisan would consider a thicker layer to provide more strength would not read on the claimed limitation because a layer thicker than 20 mils would not read on the claimed invention of “no more than 15 mils.” Additionally, it is unclear under what application an ordinary artisan would consider it desirable to decrease the thickness of Davis’s adhesive tape to be “no more than 15 mils” and be “strongly bonded.” For the purposes of this appeal only, even if we were to assume that an ordinary artisan may consider it desirable to have a thickness that is “no more than 15 mils” the Examiner’s reasoning does not explain why modifying the 1 Davis’s adhesive tape is disposed between roofing membranes. For example, Figure 1 depicts adhesive tape 14 between roofing membranes 10 and 11. Davis, col. 6, ll. 23-32. Additionally, primers 15 and 16 are deposited between adhesive tape 14 and membranes 10 and 11. See Davis, fig. 1. Appeal 2012-004271 Application 12/834,330 4 thickness of Davis’s adhesive tape can be optimized within prior art conditions or through routine experimentation. See e.g., MPEP § 2144.05. Thus, the Examiner’s rejection of claims 1 and 13, and their dependent claims, as unpatentable over Davis and Janoski is not sustained. DECISION We REVERSE the rejection of claims 1-20. REVERSED Klh